UNITED STATES INTERNATIONAL TRADE COMMISSION
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`WASHINGTON, D.C.
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`Before Honorable Charles E. Bullock
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`Administrative Law Judge
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`In the Matter of
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`CERTAIN NOISE CANCELLING
`HEADPHONES
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`Investigation No. 337—TA—626
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`PHITEK SYSTEMS LIMITED’S (NZ)
`MOTION TO MODIFY ORDER NO. 4: SETTING THE PROCEDURAL SCHEDULE
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`Pursuant to Ground Rule No. 2, Respondent Phitek Systems Limited (“Phitek”) hereby
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`moves for an order modifying Order No. 4: Setting the Procedural Schedule (“Procedural
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`Schedule”) with respect to the deadline to exchange initial expert reports and asks this Court to
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`modify Phitek’s deadline to serve its initial expert report from May 28, 2006 to June ll, 2008
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`and to move the deadline to exchange rebuttal reports from June 11, 2008 to June 18, 2008 for
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`good cause.‘
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`In a highly unusual move, Bose refuses to disclose the testing methodology and test
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`calculations it uses to support its claim that Respondents allegedly infringe certain claims of the
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`Asserted Patents. Bose is using this testing methodology and test calculations as a “sword” and
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`yet is claiming it is “shielded” from disclosure by the attorney work product.
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`Bose submitted with its Complaint an Infringement Claim Chart and Domestic Industry
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`Claim Chart, which discloses certain measurements and other numerical data relating to
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`“compliance” (i.e., flexibility or “low stiffness” as described by Bose) of the driver and rear
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`cavity of the various headphone products at issue here and it refuses to tell Respondents how it
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`I Phitek is not asking to modify any other dates on the Procedural Schedule.
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`derived these numbers.2 In answering interrogatories directed to why Respondents’ products are
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`alleged to infringe the ‘252 patent, Bose similarly set forth a chart depicting the exact same
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`“compliance” data Bose first disclosed in the Complaint.3 Although Bose relies on these
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`numerical “compliance” values4 to support its claim that Respondents’ products infringe the ‘252
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`patent, in response to discovery requests, Bose refused to disclose the testing methodology and
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`the ancillary documents created during its testing5 so that Respondents can analyze the propriety
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`and accuracy of Bose’s methodology.
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`Accordingly, on or about March 27, 2008, Phitek filed a Motion to Compel Discovery
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`from Bose Corporation (“Motion to Compel”).
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`In Bose’s Opposition to Phitek’s Motion to
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`Compel Discovery Bose represented to this Court that Bose will only present evidence of
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`compliance testing vis—a—vis
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`its independent experts during the initial exchange of expert
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`reports.6
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`The insufficiency of Bose’s response was recognized by the ITC Staff in its response to
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`Phitek’s Motion to Compel when it stated:7
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`If Bose intends to present evidence concerning the compliance testing through expert
`testimony or otherwise to support its infringement allegations in this investigation, the
`Staff submits that Respondents should be entitled to discovery as to the methodologies
`that have been used by Bose to determine those compliance numbers. At this point,
`without the benefit of expert discovery, it is premature to determine which evidence will
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`2 CompIainant’s Infringement Claim Chart and Domestic Industry Claim Chart, attached as Exhibit A to
`Respondent Phitek System Limited’s (NZ) Motion and Memoranda of Law to Compel Discovery from Bose
`Corporation, filed on March 27, 2008 (“Phitek’s Motion to Compel”).
`3 Exhibits 5 & 7 to Complainant Bose’s First Supplemental Responses to Phitek‘s First Set of interrogatories,
`attached as Exhibit B to Phitek’s Motion to Compel.
`4 Compare Ex. 12 of Complaint with Ex. 5 of Answers to Interrogatories; and Ex. 30 of Complaint with Ex. 7 of
`Answers to Interrogatories.
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`5 See Complainant Bose’s First Supplemental Responses to Phitek’s First Set of Interrogatories Nos. 28, 30 and 31,
`attached as Exhibit B to Phitek’s Motion to Compel; see correspondence from counsel for Phitek to counsel for
`Bose dated February 22, 2008 attached as Exhibit D to Phitek’s Motion to Compel; see also Discovery Committee
`Report, March 20, 2008 ‘II 7, attached as Exhibit F to Phitek’s Motion to Compel.
`6 See Complainant Bose Corporation’s Opposition to Respondent Phitek Systems Limited’s (NZ) Motion to Compel
`Discovery, p. 4, filed April 7, 2008.
`7 Commission Investigative Staff’s Response To Phitek Systems Limited’s (NZ) First Motion To Compel Discovery
`From Bose Corporation.
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`be relied upon by Bose to support its infringement contentions. Based on its
`representations, however, Bose should be precluded from relying upon the pre-suit
`compliance testing as evidence in this investigation unless it chooses to produce the
`information concerning the underlying methodologies at the earliest practicable time.
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`8
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`If Bose is allowed to use the testing methodology and test calculations as both a “sword”
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`and as a “shield”, then the first time Phitek will learn Bose’s test methodology and calculations
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`upon which it will rely to show infringement is on May 28, 2008, the deadline to exchange initial
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`expert reports. This creates an undue burden on Respondents as they will not have sufficient
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`time to analyze and evaluate this critical information before it has to submit its rebuttal report.
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`It
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`also is a waste of judicial resources as it may turn out the Bose and Respondents do not have
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`significant differences in their test methodologies and calculations. If the points in common can
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`be evaluated before hand, then all parties will be able to focus on the points in dispute.
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`Phitek submits it has good cause for an extension of its deadline to serve its initial expert
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`report from May 28, 2008 to June ll, 2008 and to move the deadline to exchange rebuttal reports
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`from June 11, 2008 to June 18, 2008 for the following reasons:
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`(1) Bose has failed to produce
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`critical discovery; (2) Phitek will be unduly burdened to produce its expert report without the
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`benefit of discovering the testing methodologies and results that are actually in dispute; (3) It is
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`consistent with federal practice for the party with the burden of proof to produce its expert report
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`prior to the party without the burden of proof; and (4) Phitek is not seeking to modify or disturb
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`any other deadlines in the Procedural Schedule.
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`CONCLUSION
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`Based upon the above—stated reasons and the arguments set forth in the accompanying
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`memorandum in support of this motion, Phitek respectfully requests that the Administrative Law
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`Judge modify Phitek’s deadline to serve its initial expert report from May 28, 2008 to June 11,
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`8 Id. at pp 4-5.
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`2008 and to move the deadline to exchange rebuttal reports from June 1 1, 2008 to June 18, 2008.
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`Such modification will not disturb any other deadlines the Court has in place.
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`Rule 3.2 Certification
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`Pursuant to this Court’s Ground Rule No. 3.2, the undersigned counsel hereby certifies
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`that Phitek has made reasonable, good-faith effort to contact and resolve the matter raised in this
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`9
`motion with Bose. Bose represented it would not produce its complete testing methodology
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`until it produced its initial expert report,10 and agreed this matter was ripe for a motion to modify
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`the Procedural Schedule.” The Commission’s Investigative Staff have reviewed this motion and
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`will reserve its comment on it.
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`Respectfully submitted,
` |n
`3;
`if’
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`
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`Dated: May 9, 2008
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`
`
`
`William B. Nash
`
`Daniel Chapman
`Mark A. J. Fassold
`
`JACKSON WALKER LLP
`
`112 E. Pecan, Suite 2400
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`San Antonio, Texas 78205
`
`(210) 978-7700
`(210) 242-4620
`
`Alan Cope Johnson
`G. Brian Busey
`Cynthia Beverage
`MORRISON & FOERSTER, L.L.P.
`
`2000 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006
`ATTORNEYS FOR PHITEK SYSTEMS LIMITED
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`9 See Discovery Committee Agenda dated April 28, 2008, attached to the Memorandum of Law submitted herewith
`as Exhibit A.
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`'0 See id.; see Bose’s Opposition to Phitek’s Motion to Compel, filed April 7, 2008.
`” See Discovery Committee Agenda dated April 28, 2008, attached to the Memorandum of Law submitted herewith
`as Exhibit A.
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`5I01272v.3 128214/00001
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`CERTIFICATE OF SERVICE
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`Marilyn R. Abbott
`Islegreltliltreyrnational Trade Commission
`#en lIn Street, nZn ROOIU n
`Washington, DC 20436
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`The Honorable Charles E. Bullock
`§i1SmlInl:F1:1:1li/(fnlalllll/r‘:11d(:gCommission
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`2 copies
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`Jennifer Whang
`Administrative Law Judge Attorney-Advisor
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`2 copies w/out attachments
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`5lOl272v.3 128214/00001
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`Christopher Paulraj, Esq.
`Ti Spence Chubb’ Esq.
`Office of Unfair Import Investigations
`U.S. International Trade Commission
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`Washington, DC 20436
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`Charles Hieken
`1332?: geggsdera
`FISH & RICHARDSON P.C.
`225 Franklin Street
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`BOSIOH, MA 02 1 10
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`Attorneys for Complainant Bose Corporation
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`E] Via Electronic Mail
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`James P. White
`Gerald T. Shekleton
`J. Aron Carnahan
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`IX] Via First Class Mail
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`W€1Sh & Katl Ltd
`120 South Riverside Plaza, 22"“ Floor
`Chicago, Illinois 60606
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`Attorneys for Respondent Audio Technica, El Via E1€Ctr0niC Mail
`U.S. Inc.
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`5l0l272v.3 128214/00001
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`Tom M. Schaumberg
`Jamie D. Underwood
`
`Adduci, Mastriani & Schaumberg, LLP
`1200 Seventeenth Floor, NW, Fifth Floor
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`Washington, DC 20036
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`Attorneys for Panasonic Corporation of North
`America
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`ECICICIE
`
`Via First Class Mail
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`Via Facsimile
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`Daniel Ebenstein
`
`Abraham Kasdan
`
`Joseph Casino
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
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`New York, NY 10016
`
`Attorneys for Panasonic Corporation of North ECICICIE
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`America
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`Via First Class Mail
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`Via Hand Delivery
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`William B. Nash
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`Alan Cope Johnston
`G‘ Brian Busey
`Cynthia Lopez Beverage
`MORRISON FOERSTER
`2000 Pennsylvania Ave., NW
`Washington, D.C. 20006-1888
`
`for Phitek Systems Limited and
`Attorneys
`Creative Labs, Inc.
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`5l0l272v.3 128214/00001